Unified Patents LLC v. FiRenet Technologies LLC

1. Case Identification

• Case #: IPR2020-00471
• Patent #: 8,892,600
• Filed: March 13, 2020
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): Firenet Technologies, LLC
• Challenged Claims: 1-17, 19-23

2. Patent Overview

• Title: Security for a Network Attached Device
• Brief Description: The ’600 patent discloses a network security system where a first computing device (e.g., a firewall) isolates a second computing device with an attached peripheral from an internal network. The system filters and reformulates data packets from an external network to provide secure access to the attached device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Coley and Coss - Claims 1-14, 16, 17, and 19-22 are obvious over Coley in view of Coss.

• Prior Art Relied Upon: Coley (Patent 5,826,014) and Coss (Patent 6,098,172).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Coley discloses the core architecture of the challenged claims. Coley’s firewall (318) was identified as the claimed "first computing device" coupled to an "internal network" (312). The network elements behind the firewall, such as web server (322), were identified as the "second computing device," which is isolated from the internal network and has an "attached device" (e.g., a hard drive). Petitioner contended Coley also teaches reformulating packets, as its proxy agent initiates new connection requests to maintain anonymity, effectively creating new packets. While Coley describes packet filtering, Petitioner asserted that Coss supplements this by teaching specific, well-known techniques for filtering packets based on IP source and destination addresses.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Coley's firewall architecture with Coss's specific packet filtering techniques. A POSITA implementing Coley’s system would have looked to references like Coss to provide explicit details on well-known filtering methods to improve the system's security, a goal shared by both references.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved applying a known technique (Coss’s IP address-based filtering) to a similar device (Coley’s firewall) to achieve the predictable result of enhanced security.

Ground 2: Obviousness over Coley, Coss, and Shand - Claims 15 and 23 are obvious over Coley in view of Coss and Shand.

• Prior Art Relied Upon: Coley (Patent 5,826,014), Coss (Patent 6,098,172), and Shand (Patent 6,147,976).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Coley and Coss from Ground 1 to address the additional limitation in claims 15 and 23: "logging... information regarding data packets that are rejected." Petitioner argued that Coley teaches a general "transaction log" but does not explicitly state that rejected packets are logged. Shand was introduced to cure this alleged deficiency, as it explicitly discloses logging rejected packets as a packet filtering and security feature.
  • Motivation to Combine: Petitioner argued a POSITA would be motivated to add Shand’s specific logging functionality to the Coley/Coss system. Because logging rejected packets was a well-known method for enhancing network security and identifying unauthorized access attempts, a POSITA would have naturally incorporated this feature into Coley's firewall to further its security objectives.
  • Expectation of Success: The combination would have been successful because it involved adding a conventional security feature (logging rejected packets) to a firewall system, which was a minimal and predictable modification.

Ground 3: Obviousness over Coss and Gelb - Claims 1-14, 16, 17, and 19-22 are obvious over Coss in view of Gelb.

• Prior Art Relied Upon: Coss (Patent 6,098,172) and Gelb (Patent 5,550,984).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner used Coss as the primary reference, arguing its system of firewalls (212, 213) protecting various sub-sites (221-223) teaches the claimed architecture. The firewalls were mapped to the "first computing device," and the internal network is formed by router (216). Petitioner asserted that Coss teaches the isolation of the sub-sites and provides the basis for packet filtering and reformulation through proxy services. Gelb was used to supplement Coss by explicitly describing what a private network or sub-site (like those in Coss) would conventionally contain, such as workstations, file servers, printers, and other peripherals, which function as the claimed "second computing devices" with "attached devices."
  • Motivation to Combine: A POSITA implementing the firewall system described in Coss would have looked to references like Gelb for a conventional understanding of the types of devices that would populate the protected sub-sites. Petitioner argued this combination was merely the application of general knowledge, as articulated by Gelb, to the framework provided by Coss.
  • Expectation of Success: A POSITA would have expected success because Gelb's teachings did not require modification of Coss’s system. Instead, Gelb provided a more complete and conventional context for the devices within Coss's sub-sites, allowing for the straightforward application of Coss's filtering rules to those devices.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 15 and 23 over the combination of Coss, Gelb, and Shand, relying on a similar motivation to add Shand's logging teachings to the base firewall system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d). It contended that although the Coley reference was cited during the prosecution of a related patent, it was never substantively applied by the examiner during prosecution of the ’600 patent itself. Furthermore, Petitioner argued that the claims of the ’600 patent are meaningfully different from those of the related patent, and that the examiner never considered Coley in combination with the other prior art references asserted in the petition (Coss, Gelb, and Shand).

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 and 19-23 of the ’600 patent as unpatentable.